File Now, Pay Later
The United States Patent and Trademark Office (“USPTO”) is considering a proposal which would make a change to missing parts practice in nonprovisional applications. The proposed change, if adopted, would somewhat extend the existing 12 month decision-making time provided by a provisional application to 24-months. The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.
Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application. The proposed change would not alter this requirement, but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. A missing parts notice is typically issued when a nonprovisional application is filed without complete payment of the required fees and/or with an unsigned inventor’s declaration.
Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.
Most notably, the USPTO proposal does not allow an applicant to defer the legal costs incurred in preparing a nonprovisional application. Applicants would still be required to make a decision whether or not to incur those costs and file their nonprovisional application prior to the 12 month window.
The USPTO is currently accepting comments on its proposal before considering it for implementation. A copy of the USPTO Notice is available here.